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  • David Vance

Disaster at the PTAB

A few weeks ago, I had the pleasure of my first-ever hearing at the USPTO Patent Trial and Appeal Board (Board). It was, unfortunately, a call-in hearing, not a video conference. Nevertheless, I had dutifully prepared a 30 slide deck for my 15-minute window. I was rather nervous having not participated in a Board hearing before and was not certain how formal the call would be or how much freedom I would have to speak and argue for my client. Logistically, everything went well. But, logistics don't count for much when trying to convince the Board of the merits of your client's claims.

The patent application claimed a dental floss that used a polymer having a molecular weight (MW) of 360-20,000. The benefit being that the polymer can diffuse from the floss and prevent the formation of plaque. This was a new use for this polymer. The primary references described a dental floss using the same polymer with a MW of >500,000 (at least 25-fold larger MW). This high MW polymer would not diffuse from the floss and prevent plaque formation. A secondary reference that suggested a MW of 5,000-50,000 was cited to complete the obviousness argument. We argued with the examiner for over a year that the primary references did not teach or suggest polymers with a MW <100,000 (as mistakenly argued by the examiner). And that the secondary reference provided no substantive reason to modify the primary references. It was quite a frustrating experience as the examiner did not seem to understand the technology.

We felt confident that on appear the Board would agree with our assessment that the primary references taught a MW >500,000 and that the secondary reference provided no reason to modify. They did agree to the first part, not the second. The first thing that Board said was that they agreed with our assessment of the primary references. I was a bit surprised, particularly since 2/3 of my slide deck contained those arguments. Sadly though, the Board then stated that the claims were still obvious over the secondary reference. I quickly collected my thoughts and explained why this assertion was not accurate (teaching away, no reasons to ignore the teachings of the primary references, etc.). But, no matter my arguments, the Board had made up its mind. I even argued that the Board was asserting a new rejection as they were completely changing the basis of the rejection. That line of reasoning fell on deaf ears. The Board had decided the claims were obvious based on a different fact pattern and that was the decision they handed down.

Well, there you have it. We lost and the patent application will now go abandoned.

What lessons did I learn? While I had prepared for what I thought was the worst-case scenario, it really was not. I had not researched the necessary case law to overcome the rejection if the Board agreed with my assessment of the primary references. My client and I thought we had the case won if our view was adopted. And this oversight cost us. Now that isn't to say we could have found the perfect case law to rebut the new rejection. But, at least we would have had a better chance.

If all goes well, that will be my only Board hearing. If not, I will encourage my client to spend more time with me preparing for surprises the Board could spring on us.

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